RULE 29.6 STATEMENT
Petitioner Infineon Technologies AG is a publicly traded company with its
headquarters in Germany. Infineon Technologies AG has no parent corporation.
Siemens AG, a publicly held company, is the beneficial owner of 10% or more
ofInfineon Technologies AG's stock.
Petitioner Infineon Technologies North America Corp. is a wholly owned
subsidiary of petitioner Infineon Technologies AG. No other publicly held
company owns 10% or more ofits stock.
Petitioner Infineon Technologies Holding North America Inc. is a wholly owned
subsidiary of petitioner Infineon Technologies AG. No other publicly held
company owns 10% or more of its stock.
TABLE OF CONTENTS
QUESTIONS PRESENTED
RULE 29.6 STATEMENT
TABLE OF AUTHORITIES
INTRODUCTION.
OPINIONS BELOW
JURISDICTION
PERTINENT RULE PROVISIONS
STATEMENT OF THE CASE
A. Background
B. The District Court Proceedings
C. The Federal Circuit Proceedings
REASONS FOR GRANTING THE WRIT
1. The Federal Circuit Violated Basic Principles Of Procedure And The Seventh
Amendment By Reversing The Jury On A Factual Question And Ordering The Entry of
Judgment For Rambus
B. The Federal Circuit Erred By Holding That "Substantial Evidence"
Did Not Support The Jury's _"Implicit" Finding That Rambus Breached
The "Relevant" Disclosure Duty.
II. The Federal Circuit Erred, And Deepened An Internal Circuit Split On A
FundamentalIssue Of Patent Law, By Holding That An Extrinsic Dictionary
Definition, Rather Than The Intrinsic Specification, Provides The Presumptive
Meaning Of A Disputed Claim Term.
CONCLUSION
TABLE OF AUTHORITIES
CASES
Bates v. Coe,
98 U,S, 31 (1878)
Bell & Howell Document Mgmt, Prods. Co.
v. Altek Sys"
132 F,3d 701 (Fed. Cir. 1997)
Borg Warner Inc. v. New Venture Gear Inc.,
237 F, Supp, 2d 919 (N.D, Ill, 2002)
Control Components, Inc. v. Valtek, Inc.,
609 F.2d 763 (5th Cir, 1980)
Corson & Gruman Co. v. NLRB,
899 F.2d 47 (D,C. Cir. 1990) (per curiam)
Dickinson v. Zurko,
527 U.S, 150 (1999)
Festo Corp. v. Shoketsu Kinzoku Kogyo
Kabushiki Co"
535 U.S, 722 (2002)
Graham v. John Deere Co. of Kansas City,
383 U.S, 1 (1966)
Iacurci v. Lummus Co.,
387 U.S, 86 (1967) (per curiam)
Inverness Med. Switz. GmbH v.
Princeton Biomeditech Corp"
309 F.3d 1365 (Fed. Cir. 2002)
Markman v. Westview Instruments, Inc.,
517U.S, 370 (1996)
Markman v. Westview Instruments, Inc.,
52 F,3d 967 (Fed. Cir, 1995) (en banc)
Multiform Desiccants, Inc. v. Medzam, Ltd.,
133 F.3d 1473 (Fed. Cir, 1998)
Neely v. Martin K. Eby Constr. Co.,
386 U.S. 317 (1967)
Nelson v. Adams USA, Inc.,
529 U.S. 460 (2000)
Panther Pumps & Equip. Co. v. Hydrocraft, Inc.,
468 F.2d 225 (7th Cir. 1972)
Parker v. Levy,
417 U.S. 733 (1974)
Pullman-Standard v. Swint,
456 U.S. 273 (1982)
Renishaw PLC v. Marposs Societa Per Azioni,
158 F.3d 1243 (Fed. Cir. 1998)
Schriber-Schroth Co. v. Cleveland Trust Co.,
311 U.S. 211 (1940)
Scimed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc.,
242 F.3d 1337 (Fed. Cir. 2001)
Span-Deck, Inc. v. Fab-Con, Inc.,
677 F.2d 1237 (8th Cir. 1982)
Starceski v. Westinghouse Elec. Corp.,
54 F.3d 1089 (3d Cir. 1995)
Texas Digital Sys., Inc. v. Telegenix, Inc.,
308 F.3d 1193 (Fed. Cir. 2002)
Tights, Inc. v. Acme-McCrary Corp.,
541 F.2d 1047 (4th Cir. 1976)
Toro Co. v. White Consol. Indus., Inc.,
199 F.3d 1295 (Fed. Cir. 1999)
United States v. Adams,
383 U.S. 39 (1966)
Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576 (Fed. Cir. 1996)
VLT Corp. v. Lambda Elecs., Inc.,
238 F. Supp. 2d 347 (D. Mass. 2003)
Warner-Jenkinson Co. v.Hilton Davis Chem. Co.,
520 U.S. 17 (1997)
Weisgram v. Marley Co.,
528 U.S. 440 (2000)
CONSTITUTION, STATUTES AND RULES
U.S. Const. amend. VII " i, 4, 13, 20
28 U.S.C. § 1254(1) 4
Fed. R. Civ. P. 50 4,9, 10
OTHER AUTHORITIES
Bender, Gretchen Ann, Uncertainty and Unpredictability in Patent Litigation:
The Time Is Ripe for a Consistent Claim Construction Methodology,
8 J. Intell. Prop. Law 175 (2001) 25
Chisum, Donald S., Chisum on Patents (2002) 27
Gallagher, Gregory J., The Federal Circuit and Claim Construction: Resolving
the Conflict
Between the Claims and the Written Description, 4 N.C. J.L. & Tech. 121
(2002) 26
Hatterbach, Ben, Chickens, Eggs, and Other Impediments to Escalating Reliance
on
Dictionaries in Patent Claim Construction, 85 J. Pat. & Trademark Off. Soc.
181 (2003) 25
Hill, Russell B. & Cote, Frank P., Ending the Federal Circuit Crapshoot:
Emphasizing Plain
Meaning in Patent Claim Interpretation, 42 IDEA 1 (2002) 26
Lipscomb, Ernest Bainbridge III, Walker on Patents (3d ed. 1987) 26
Moore, James W., et al., Moore's Federal Practice (3d. ed. 1997) 10
INTRODUCTION
The Federal Circuit was established in 1982 to bring greater uniformity and
expertise to patent cases. But the Federal Circuit is still an Article III
appellate court, bound by the same rules and procedures that govern all the
other appellate circuits. The Federal Circuit does not sit as a federal
appellate super-jury that is free to retry patent cases and to ignore the most
basic rules of judicial procedure. This point is sometimes lost on the Federal
Circuit, as illustrated by this Court's decision three Terms ago in Nelson v.
Adams USA, Inc., 529 U.S. 460 (2000), which unanimously reversed the Federal
Circuit on the fundamental point that.a party is entitled to be heard before the
entry of judgment against it, and expressly compared the procedure sanctioned by
the Federal Circuit to Alice in Wonderland, see id. at 468 n.2. And just the
Term before that, this Court rejected "the Federal Circuit's claim for an
exception" to the settled standards governing federal judicial review of
administrative agency action. Dickinson v. Zurko, 527 U.S. 150, 154 (1999).
Here, the Federal Circuit has struck once again. The court not only reversed a
fraud jury verdict against respondent on the ground that "substantial
evidence" did not support the disclosure duty found by the jury as a matter
of fact, but proceeded to order the entry of judgment in respondent's favor
without even giving petitioners their day in court to litigate the case under
the new disclosure duty. The court thereby violated the most basic norms of
appellate procedure. As Judge Prost noted in her vigorous dissent, the jury was
indisputably presented with ample testimony and written evidence supporting the
disclosure duty found by the jury, and the panel majority simply substituted its
own view of facts for the jury's. And instead of remanding for a new trial under
the new duty, the panel majority simply declared that "substantial evidence
does not support the implicit jury finding that [respondent] breached the
relevant disclosure duty," App. 2a, and directed the entry of judgment in
respondent's favor as a 'matter of law, even though there could have been no
"implicit" jury finding regarding a breach of the "relevant"
disclosure duty, since the appellate court had just articulated that very duty.
Because the question whether respondent breached that duty was never tried, the
Federal Circuit ordered the parties after oral argument to submit evidence in
supplemental pleadings, and effectively conducted an in camera appellate trial
behind closed doors. Needless to say, this process bears no resemblance to
settled appellate procedure. The panel majority simply appointed itself jury,
trial court, and reviewing all at once.
Turning to patent law, the Federal Circuit held that a patent specification
is irrelevant in construing a claim term unless it provides a clear disclaimer
or disavowal of the term's
dictionary definition. In so holding, the court failed to distinguish, or even
address, a contrary line of circuit precedent (ratified by this Court's decision
in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996» holding that a
specification provides a claim term's presumptive meaning, and should be
consulted before a dictionary definition. The court thereby ignored the
public-notice function of a specification, which is part of the patent's public
record, as opposed to a random dictionary definition, which is not. Moreover,
the court ignored the extensive claim-construction evidentiary hearing below,
where respondent's own expert conceded that the term "bus," as used in
the specification to describe the invention, supported petitioners' construction
of that critical claim term. The real issue presented here, at bottom, is
whether the Federal Circuit is above the law in patent cases. By definition,
there can be no circuit split in such cases in light of the Federal Circuit's
exclusive jurisdiction. But that fact should not allow the Federal Circuit to
ignore basic rules of judicial procedure. The unique and specialized nature of
the Federal Circuit's docket may have the advantage of promoting greater
expertise and uniformity in patent cases, but it also has the corresponding
disadvantages of insularity and a willingness to second-guess agencies, trial
courts, and juries in this area. It is thus imperative for this Court, in
appropriate cases, to remind the Federal Circuit of its proper role in our
federal judicial system.
The exceptional practical importance of this case only underscores the need for
this Court's intervention. At stake here is nothing less than the future of the
computer memory industry. Respondent Rambus sought to dominate that industry by
participating in a standards-setting body while secretly amending its patent
applications to cover the standards under consideration and then-after the
standards were adopted and manufacturers spent vast sums implementing
them-turning around and demanding extortionate licensing fees. Petitioners
Infineon Technologies AG, Infineon Technologies North America Corp., and
Infineon Technologies Holding North America Inc. (collectively
"Infineon") refused to capitulate to those demands and, after Rambus
sued Infineon for patent infringement, countersued Rambus for fraud. As the
district court found, App. 208a-213a, and Rambus did not even challenge on
appeal, App. 41a, Rambus destroyed and withheld material evidence, and its
executives provided "false or misleading testimony." Although Rambus
conceded at trial that it secretly drafted its patent applications to cover the
JEDEC standard and the jury ruled for Infineon on the fraud claim, the Federal
Circuit substituted its own view of the facts for the jury's and simply picked
Rambus as the winner on that claim.
The decision below thus threatens to crown Rambus' fraudulent scheme with
success. Because the law neither commands nor even permits that perverse result,
this Court should either summarily reverse the decision below or set this case
for plenary review. At the very least, this Court should call for the views of
the United States, to provide the perspective of the Patent & Trademark
Office, the Federal Trade Commission (which has sued Rambus under the antitrust
laws for the conduct challenged here), and other interested federal agencies.
OPINIONS BELOW
The Federal Circuit's opinion is reported at 318 F.3d 1081 and reprinted in the
Appendix ("App.") at la-66a. The unreported order denying the petition
for panel rehearing and suggestion for rehearing en bane is reprinted at App.
67a-68a. The district court' s unreported order construing Rambus' patent claims
IS reprinted at App. 69a-130a. The district court's order denying in part and
granting in part Rambus' motion for judgment as a matter of law is reported at
164 F. Supp. 2d 743, and IS reprinted at App. 131 a-189a. The district court's
order granting Infineon attorneys' fees is reported at 155 F. Supp. 2d 668, and
is reprinted at App. 190a-228a.
JURISDICTION
The Federal Circuit entered judgment on January 29, 2003.
PetItioners timely filed a petition for panel rehearing and suggestIon for
rehearing en bane, which was denied on April 4, 2003. The Federal Circuit stayed
issuance of the mandate pending disposition of this petition on April 11, 2003.
This Court has jurisdiction pursuant to 28 U.S.C. § 1254(1).
PERTINENT RULE PROVISIONS
The Seventh Amendment provides:
In Suits at common law, where the value in controversy shall exceed twenty
dollars, the right of trial by jury shall be preserved, and no fact tried by a
jury, shall be otherwise reexamined in any Court of the United States, than
according to the rules of the common law.
Rule 50 of the Federal Rules of Civil Procedure provides in pertinent part:
(a) Judgment as a Matter of Law.
(l) If during a trial by jury a party has been fully heard on an Issue and there
is no legally sufficient evidentiary basis for a reasonable jUry to find for
that party on that issue, the court may determine the Issue against that party
and may grant a motion for judgment as a matter of law against that party with
respect to a claim or defense that cannot under the controlling law be
maintained or defeated without a favorable finding on that Issue. .,.
(b) Renewing Motion for Judgment After Trial; Alternative Motion for New Trial. If, for any reason, the court does not grant a motion for judgment as a matter of law made at the close of all the evidence, the court is considered to have submitted the action to the jury subject to the court's later deciding the legal questions raised by the motion. The movant may renew its request for judgment as a matter of law by filing a motion no later than 10 days after entry of judgment. . .. In ruling on a renewed motion, the court may:
STATEMENT OF THE CASE
A. Background
At the center of this case is the Joint Electron Devices Engineering Council ("JEDEC"), a cooperative group of companies that sets technical standards for electronic products. App. 132a n.1; 134a-135a. JEDEC standardization fosters competition and customer supply by allowing different manufacturers to produce interchangeable components. To maximize these benefits, JEDEC favors the adoption of "open" standards, free from restrictive intellectual-property rights.
Id.
JEDEC thus requires its participants to disclose any issued or pending patents
that relate to its standardization work, id., thereby allowing JEDEC
participants to assess the potential impact of patents and patent applications
before adopting new industry standards.
JEDEC Subcommittee 42.3 (JC-42.3) establishes standards for the design of random
access memory ("RAM"), the memory chip found in virtually every
personal computer in the world. In 1991, the subcommittee began developing the
standard for an advanced version of RAM, synchronous dynamic random access
memory ("SDRAM"). App. 134a-136a. Among the subcommittee's members
were petitioner Infineon, a manufacturer of semiconductor memory products, and
respondent Rambus, a company that does not manufacture any products, but simply
licenses its patent portfolio. See id.
Rambus participated in JEDEC for more than four years, from 1991 to 1995. App.
136a. During this period, Rambus tried in vain to promote its own proprietary
memory design as the industry standard. As it became clear that JEDEC was on its
way to adopting a different standard, Rambus resolved to obtain patent rights to
the JEDEC standard. Accordingly, Rambus embarked on a process ofmorphing its
pending patent claims in an attempt to cover the emerging SDRAM standard. App.
145a-146a. Indeed, Rambus memorialized this strategy in a confidential business
plan:
We believe that Sync DRAMs infringe on some claims in our filed patents; and
that there are additional claims we can file for our patents that cover features
of Sync DRAMs. Then we will be in position to request patent licensing (fees and
royalties) from any manufacturer of Sync DRAMs. Our action plan is to determine
the exact claims and file the additional claims by the end ofQ3/92. Then to
advise Sync DRAM manufacturers in Q4/92.
App. 45a, 207a.
Rambus, however, never informed JEDEC that it was amending its patent
applications to cover the emerging JEDEC standard. App. 136a. To the contrary,
when JEDEC participants voted on features of the SDRAM standard, Rambus'
representative did not check the box on the ballot indicating that Rambus had
patent disclosures to make. Fed. Cir. App. 2742-46.
That Rambus' scheme was improper did not escape, its attorneys. In 1992, soon
after Rambus first began attending JEDEC meetings, its outside counsel, Lester
Vincent, advised Rambus that "a finding of inequitable conduct could be a
consequence of non-compliance with the JEDEC disclosure duty."
App.207a-208a. Then, in 1993, Vincent sent Rambus a detailed presentation on the
consequences of patenting standards, which outlined, among other things, the
elements of equitable estoppel and antitrust issues based on (1) misconduct at
standards bodies and (2) duties of disclosure. Fed. Cir. App. 16466-87. In late
1995, Vincent advised the company to stop attending JEDEC meetings. Fed. Cir.
App. 13045-47, 15944 48,16018-19. Nevertheless, Rambus continued to attend such
meetings through 1995, and did not formally withdraw until
June 1996, after JEDEC had adopted an SDRAM standard. App. 4a, 136a.
Unaware that Rambus had filed patent claims intended to cover that standard,
Infineon, like other JEDEC participants, invested hundreds of millions of
dollars to develop JEDEC compliant SDRAM products. All the while, Ran1bus
monitored the ongoing development of an advanced SDRAM standard (DDR SDRAM)
through secret informants with code names like "Secret Squirrel" and
"Deep Throat." App.47a. Rambus also continued to amend its pending
patents to target tho.se standards. App. 136a-137a. Rambus concluded that its
"leverage" to extract licensing fees from JEDEC members would be
greatest if it lay in wait. Fed. Cir. App. 16405.
B. The District Court Proceedings
Rambus pulled the trigger in June 2000 by informing Infineon that it owned
patent rights covering the SDRAM technology, and seeking extortionate licensing
fees., Less than two months later, Rambus filed this lawsuit claIming that
Infineon's use of the JEDEC-compliant SDRAM technology infringed 57 claims of
four Rambus patents, U.S. Patent Nos. 5,593,263, 5,954,804, 6,032,214, and
6,034,918. Infineon promptly countersued Rambus for, among other things, fraud
under Virginia common law for failing to disclose issued and pending patents
relating to SDRAM during its JEDEC participation.
During discovery, the district court (Payne, J., E.D. Va.) agreed to pierce
Rambus' attorney-client privilege under the crime-fraud exception with respect
to communications concerning Rambus' JEDEC participation. After that ruling,
Rambus' outside counsel produced damning documents that Rambus itself had failed
to produce in discovery. As the district court found, Rambus had destroyed many
of these documents through a bogus "document retention policy"
designed to "get[] rid of documents that might be harmful in
litigation." App. 211a. In addition, the district court found, "Rambus
failed to list numerous documents on its privilege log, which (as it was
ultimately learned) documented its .fraudulent activity at JEDEC." App.
209a.
"Prodded by reference to the belatedly obtained documents," App. 210a,
Rambus' CEO, Geoff Tate, and its JEDEC representative, Richard Crisp, were
forced to admit that their earlier testimony was false. Crisp had testified that
he "never, ever" participated in drafting Rambus' patent applications;
in light of the concealed documents, he conceded that he had indeed participated
in drafting those applications in an effort to capture the JEDEC SDRAM standard.
Id. And Tate had testified that he did not believe that Rambus drafted claims to
cover the JEDEC SDRAM standard; in light of the concealed documents, he conceded
that Rambus had amended its claims to target that standard. See id.; see also
id. at 145a.
In March 2001, after a three-day evidentiary hearing, the district court issued
an opinion construing Rambus' patent claims as a matter of law. See App.
69a--130a. Rambus subsequently dropped the charge of infringement with respect
to the '804 patent. App. 133a. The district court thereafter granted Infineon
judgment as a matter of law on all of Rambus' remaining patent claims, holding
that Rambus failed to prove that Infineon had infringed those claims. See id.
lnfineon's fraud counterclaims went to the jury, which-after a
two-and-a-half-week trial-returned a verdict for Infineon on the fraud claim,
and awarded both nominal and punitive damages. See id. Both sides filed
post-trial motions. On August 9, 2001, the district court denied Rambus'
post-trial motion for judgment as a matter of law with respect to the jury's
fraud verdict as to the SDRAM technology. App.131al89a. The court also awarded
Infineon attorneys' fees and costs. App. 190a-228a. Rambus appealed, and
Infineon crossappealed on some issues not relevant here.
The Federal Circuit reversed the judgment on both the fraud and
patent-infringement issues. With respect to fraud, a sharply divided panel held
that the district court had erred in denying Rambus' post-trial motion for
judgment as a matter of law under Rule 50(b) on the ground that no
"substantial evidence" supported (1) the JEDEC disclosure duty found
by the jury as a matter offact, App. 24a 35a, or (2) the jury's
"implicit" factual finding that Rambus breached the
"relevant" disclosure duty, App. 2a, 35a-39a.
Because the case was not tried under the majority's redefined disclosure duty, the panel contacted the parties after oral argument to request documents that were not in the appellate appendix, and then undertook its own de novo appellate fact finding. Judge Prost vigorously dissented from the panel s reversal of the fraud claim, noting that ample record evidence supported the factual findings underlying the jury verdict in Infineon's favor. See id. at 44a-66a. With respect to patent infringement, the Federal Circuit held in relevant part that the trial court had erred in construing the critical claim term "bus" by looking primarily to the intrinsic evidence (the claims, specification, and prosecution history) rather than the extrinsic evidence (a particular dictionary definition). See id. at 19a-22a.
According to the Federal Circuit, a court is entitled to consult a patent
specification only
after consulting a dictionary to determine the meaning of disputed claim terms,
and only to the extent it "clearly disavows or disclaims the dictionary
definition. Id. at 20a, 22a.
The Federal Circuit denied panel rehearing and rehearing en banc. See id. at
67a-68a. This petition follows.
REASONS FOR GRANTING THE WRIT
I. The Federal Circuit Violated Basic Principles Of Procedure And The Seventh
Amendment By Reversing The Jury On A Factual Question And Ordering The Entry of
Judgment For Rambus.
The Federal Circuit manifestly erred, as an initial matter, by holding that no "substantial evidence" supported (1) the JEDEC disclosure duty found by the jury as a matter offact, App. 24a35a, or (2) the jury's "implicit" factual finding that Rambus breached the "relevant" disclosure duty, App. 2a, 35a-39a.
Both holdings are groundless. The decision below is a clear usurpation of the
jury’s role, and mere recitation of the "substantial evidence"
standard cannot obscure that fact. "The rules governing the trial of patent
cases are no different than in other types of civil litigation, and the scope of
our review on appeal follows the same pattern." Panther Pumps &Equip.
Co. v. Hydrocraft, Inc., 468 F.2d225, 227 (7th Cir. 1972) (Stevens,
J.) (internal quotation omitted).
Under Rule 50, a district court can grant judgment as a matter of law after trial only if "there is no legally sufficient evidentiary basis for a reasonable jury to find for (the nonmoving] party on that issue." Fed. R. Civ. P. 50.
An appellate court reviewing the grant or denial of such a judgment applies
that same standard. See 9 James W. Moore et al., Moore's Federal Practice §
50.92(1], at 50-122-23 n.1 (3d ed. 1997) (citing cases from every circuit).
"If the appellate court finds, after drawing all reasonable inferences in
favor of the nonmovant and making all credibility assessments in the nonmovant's
favor, that sufficient evidence permits a rational juror to find for the
nonmovant," then the appellate court must affirm the denial of a Rule 50
motion. Id. at 50-124 & n.2.
The Federal Circuit first erred by holding that "substantial
evidence" did not support the JEDEC disclosure duty found by the jury as
a matter of fact. I Indeed, as Judge Prost pointed out in her dissent below,
this is not even a close call; "there was more than substantial evidence
for the jury" to find such a duty. App. 59a. What the panel majority did,
plain and simple, was substitute its own view of the "duty that it
believes JEDEC should have adopted," App. 60a (emphasis added), for the
disclosure duty that the jury decided as a factual matter that JEDEC did
adopt.
The panel majority conceded (and the parties agreed) that the scope of the
JEDEC disclosure duty in this case is a matter of fact, not law. App. 7a.
According to the panel majority, however, "a reasonable jury could only
find that the duty to disclose a patent or application arises when a license
under its claims reasonably might be required to practice the final SDRAM
standard." App. 31 a (emphasis added). The majority then proceeded to
apply this standard by "determin[ing] that substantial evidence does not
support the finding that [Rambus'] applications had claims that read on the
[final] SDRAM standard." App.36a2
[(footnote) It is a basic rule of procedure that where, as here, the jury
returns a general verdict on the ultimate legal question (i.e.. Rambus
committed fraud), the law presumes the existence of findings necessary to
support the verdict reached (i.e., Rambus had a disclosure duty and breached
that duty). See, e.g., Starceski v. Westinghouse Elec. Corp., 54 F.3d 1089,
1100 (3d Cir. 1995); Span-Deck, Inc. v. Fab-Con. Inc., 677 F.2d 1237, 1241
& n.5 (8th Cir. 1982); Control Components, Inc. v. Valtek.Inc., 609 F.2d
763, 767 (5th Cir. 1980); Tights, Inc. v. Acme-McCrary CO/p., 541 F.2d 1047,
1055 (4th Cir. 1976); Panther Pumps, 468 F.2d at 228.]
It is simply not true that the narrow disclosure duty articulated by the panel
majority (much less the even narrower duty actually applied by the panel
majority) is the only disclosure duty supported by substantial evidence. As
Judge Prost explained, the record is replete with evidence that supports a
broader JEDEC disclosure duty extending to issued or pending patents related
to standards under consideration (regardless of whether eventually adopted) by
JEDEC. App. 50a-60a; see also App. 144a n.3 (district court finding that
"the JEDEC policy requires disclosure of all patents and patent
applications which 'related' to the work of JEDEC").
It is simply not true that the narrow disclosure duty articulated by
the panel majority (much less the even narrower duty actually applied by the
panel majority) is the only disclosure duty supported by substantial evidence.
As Judge Prost explained, the record is replete with evidence that supports a
broader JEDEC disclosure duty extending to issued or pending patents related
to standards under consideration (regardless of whether eventually adopted) by
JEDEC. App. 50a-60a; see also App. 144a n.3 (district court finding that
"the JEDEC policy requires disclosure of all patents and patent
applications which 'related' to the work of JEDEC").
Perhaps the most compelling evidence along these lines is testimony by JEDEC
officials and participants describing the JEDEC disclosure duty. John Kelly
(general counsel of the Electronic Industry Association and the person
responsible for implementing JEDEC's patent policy) testified that this policy
"required the early disclosure ofpatents and patent applications that are
or may be required to comply with the standard." App. 53a (emphasis in
original); see also id. at 141 a. Gordon Kelley (chairman of JC-42.3 and IBM's
JEDEC representative) testified that "[i]t's in complete violation of
JEDEC requirements of openness and fairness with regard to notification of
patents and pending patents" to secretly draft
..
2 The panel majority's articulation of its disclosure duty thus differs
markedly from its application of that duty. As Judge Prost noted, while the
panel majority declared that Rambus was required to disclosure claims that
"reasonably might" be construed to read on the final SDRAM standard,
App. 31a, the panel majority proceeded to apply that duty by assessing whether
Rambus' claims actually read on the final SDRAM standard,see id. at 36a. See
id. at 63a n.6 ("The majority states that its disclosure duty does not
'require a formal infringement analysis,' even though the majority then
proceeds to determine whether the pending claims read on the standard.").
13
patent claims in an attempt to cover an emerging JEDEC standard. App. 53a; see
also id. at 141a. Reese Brown, a JEDEC consultant and member of Committee
JC-42.3 for 25
years testified that during the SDRAM standardization process years from 1991
to 1996, if a member had a pending patent application relating to the
standardization effort, the member
had a duty to disclose the pending patent. App. 141a-142a (emphasis added).
And Willibald Meyer (Infineon's JEDEC representative) testified that "the
holders of a patent or an
application should make the committee aware... that, the application of the
patent which they held or had filed was in relationship to the work in JEDEC
that we were doing. App.
53a-54a (emphasis omitted). By rejecting this direct trial testimony the panel
majority necessarily concluded not only that it knew more about the scope of
the JEDEC disclosure duty
than JEDEC officials and participants, but that the contrary testimony was not
even "substantial evidence" upon what a rational jury could base a
factual finding. That conclusion manifestly violates the Seventh Amendment's
command that "no fact tried by a jury shall be otherwise reexamined in
any Court of the United States." U.S. Const. amend. VII.
As Judge Prost noted, moreover, the interpretation of the JEDEC disclosure
duty to which JEDEC officials and participants testified at trial is amply
supported by documentary
evidence. Section 9.3.1 of the October 1993 JEDEC Manual of Organization and
Procedure, entitled "Committee Responsibility Concerning Intellectual
Property, requires disclosure of "any knowledge they may have of any
patents, or pending patents, that might be involved in the work they are
undertaking." App. 51a, 146a (emphasis modified)." In addition the
ballots used for voting in JC-423 stated that If anyone receiving this ballot
is aware of patents involving this
ballot, please alert the Committee accordingly during your voting
response," and a witness testified that thIS language required disclosure
of "intellectual property that IS related to
that ballot or to the content of that ballot." App. 52a (emphasis in
original). Indeed, as the district court noted, the key issue at trial was not
the validity of the "related to" standard but whether that standard
applied to patent applications or only to issued patents. App. 141 a, 1 94a.
The panel majority notably did not deny any of the foregoing evidence, but
simply asserted that the JEDEC disclosure duty urged by Infineon was
implausible, because (1) such a duty would be "amorphous" and
"unbounded," and (2) the record also contained evidence that other
JEDEC members did not comply with such a duty. App. 32a-33a. Neither of these
assertions, however, remotely suggests that no "substantial
evidence" supports the disclosure duty found by the jury.
At best, there was conflicting evidence on the scope of the JEDEC disclosure
duty, which is one of the reasons why there was a trial here in the first
place. Although the jury may have been entitled to disbelieve JEDEC's views on
the scope of its own disclosure duty, the Federal Circuit was not. As Judge
Prost explained: "JEDEC was free to formulate whatever duty it desired
and it is not this court's job to rewrite or reinterpret the duty on the basis
that it is unbounded (which I do not think it is)." App.59a. Whatever the
perceived virtues of the JEDEC disclosure duty adopted by the panel majority,
its adoption transcends the judicial role.3 Again, Judge Prost got it just
right: "Having identified substantial evidence supporting a sufficiently
broad duty of disclosure to support the jury's verdict, our job is done. The
applicable standard of review does not permit us to go further, reweighing the
evidence and determining de novo that the duty should be defined or applied in
a different manner." App. 54a.4
<think there's a footnote from the previous page in this one>
Indeed, if anything, it is the disclosure duty imposed by the panel majority-a
duty to disclose claims that actually "read on" the final JEDEC
standard, see App. 36a-that is implausible and unworkable. By definition, the
final JEDEC standard will not be known until the conclusion of the multiyear
JEDEC process. A JEDEC participant obviously would have no way of knowing
whether its patent claims read on the final standard until that standard is
ultimately adopted, which by definition is too late, since the whole point of
the disclosure duty in the first place is to prevent JEDEC from adopting
standards subject to patent rights. As Judge Prost explained,
the panel majority's emphasis on a comparison between patent claims and a
final, adopted standard "does not take into account the possibility that,
during the course of its work, the [standards body] considers, debates,
rejects and amends various proposals as the standard evolves." App. 51 a.
In addition, JEDEC participants have no way of knowing in advance how the
courts might ultimately construe their patent 3 Indeed, the majority's concern
with defining the boundaries of the JEDEC disclosure duty is especially
misplaced here, because Rambus' conduct was not even in the gray zone. As the
majority conceded, Rambus itself believed that its patent applications covered
the standardized SDRAM technology, see App. 38a-39a, so Rambus is in no
position to throw itself at the court's mercy as the victim of an unfairly
vague duty, see, e.g., Parker v. Levy, 417 U.S. 733, 755-56 (1974). Certainly
the majority's concern that "there is a staggering lack of defining
details in the EIA/JEDEC patent policy," App. 34a, provides no license
for an appellate court to redefine that policy; to the contrary, such a
"lack of defining details" in the policy onlyunderscores that the
scope of the duty was a factual issue for the parties to argue to the jury
as they did. The panel majority's decision to reverse on the basis that
"substantial evidence" did not support the disclosure duty advanced
by Infineon at trial is particularly egregious because Rambus did not even
raise this argument in its opening brief below. Instead, Rambus argued in that
brief that the jury could not reasonably have found a breach of the disclosure
duty, however defined. See Rambus Fed. Cir. Br. 26-27 ("The contours of
the disclosure obligation
were murky at best What is clear, though, is that whatever the duty of
disclosure, Infineon did not prove that Rambus breached it.") (emphasis
added). Appellate courts generally do not decide cases on the basis of
arguments not advanced in the appellant's opening brief, because that allows
"sandbagging" of the appellee. See, e.g., Corson & Gruman Co. v.
NLRB, 899 F.2d 47,50 n.4 (D.C. Cir. 1990) (per curiam).
claims-as underscored by this case, where the district court and the Federal Circuit construed the claims differently. It makes no sense to interpret the scope of the JEDEC disclosure duty retroactively by reference to the Federal Circuit's ultimate construction of the claims. As Judge Prost noted, "the maJority s applicatIOn of Its rule arguably requires a Markman claim construction, application of the doctrine of equivalents, a Festo analysIs, and perhaps eyen aJohnsoll & Johnston analysis before anyone can say for sure whether a claim reads on a standard" and thus must be disclosed. App. 66a. As a practical matter, JEDEC could not operate under this standard.
Although it is well-established that an appellate court has the raw power to
order the entry of judgment in a case after holding that the trial court
erroneously denied a motion for judgment as
5 Beca.use the JEDEC disclosure duty is not tied to a patent infringement
analysIs, the fraud judgment in Infineon's favor can and should stand regardless
of.whether the district court crred in construing Rambus' patent claims. That IS
why Judge Prost would have affIrmed the fraud judgment in lnfineon s favor even
though she agreed with the majority with respect to
claIm constructIon. .
a matter of law, see, e.g., Neely v. Martin K. Eby Constr. Co., 386 U.S. 317,
326 (1967); cf Weisgram v. Marley Co., 528 U.S. 440, 449-50 (2000), it is
equally well-established that the
exercise of that power is inappropriate where "the party whose jury verdict
has been set aside on appeal... may have valid grounds for a new trial,"
id. at 451 (quoting Neely, 386 U.S. at
325). Thus, inlacurci v. Lummus Co., 387 U.S. 86 (1967) (per curiam), this Court
summarily reversed an appellate decision that in turn had reversed the denial of
a motion for judgment as a matter of law. This Court held that the appellate
court "should have ., remanded [the case) to the Trial Judge, who was in
the best position to pass upon the question of a new trial in light of the
evidence" and the appellate court's disposition. ld. at 88; see also
Weisgram, 528 U.S. at 451 n.7 (discussing Iacurci). The lacurci Court thus
vacated the appellate court's judgment "insofar as it directed entry of
judgment for respondent," and remanded the case to the appellate court
"with
instructions to remand to the District Court to determine whether petitioner is
entitled to a new trial" in light of the appellate court's ruling. 387 U.S.
at 88. Here, rather than remanding the case for the district court to determine
whether Infineon was entitled to a new trial in light of its ruling, the panel
majority itself scoured the record to determine whether lnfineon had presented
evidence at trial to show that Rambus breached the JEDEC disclosure duty as
redefined by the panel majority. (Indeed, because this issue had not been
briefed, the panel majority repeatedly asked the parties for supplemental
evidentiary submissions after the case was fully briefed and argued.) But that
was an exercise in futility, because Infineon simply cannot be expected to have
tried this case under ground rules different than those established by the
district court, on pain of losing its case altogether on appeal if those ground
rules turned out to be wrong. That is why, under basic norms of appellate
procedure, if the record does not support affirmance under the standard defined
by the appellate court, the proper course is to vacate the judgment and remand
the case for a new trial. See, e.g., Pullman-Standard v. Swint, 456 U.S. 273,
292 (1982).
And the panel majority erred not only by scouring the record to determine
whether Rambus breached the panel majority's newly minted dIsclosure duty, but
by saddling Infineon with the burden. of identifying such evidence on appeal.
See App. 39a ("If eVIdence of Rambus violating its duty to disclose exists
Infineon did not place it in the record or provide it to this court.")
(emphasis added). . Again, the panel majority thereby revealed a
mIsunderstanding of the most basic tenets of appellate procedure. Infineon, as
the plaintiff with respect to the fraud claIm, bore the burden of proof with
respect to that claim at trial. Once Infineon secured a judgment in its favor
from the trial court, however, the burden shifted, and Rambus as the appellant
with respect to the fraud claim, bore the burden on appeal of demonstrating that
there was an insufficient basis for. the jury to conclude that Rambus had
committed fraud. This clear error in the allocation of the burden of proof on
appeal alone warrants summary reversal, because the Federal Circuit held only
that Infineon had not shown on appeal that Rambus breached the supposedly
narrower duty. App. 39a. Because Infineon had no obligation to make any such
showing, the Federal Circuit's disposition cannot stand. In any event, the
record in this case contains more than substantial evidence to support a finding
that Rambus breached even. the disclosure duty defined by the panel majority-a
duty to dIsclose "any patent or application with claims that a competitor
or other JEDEC member reasonably would construe to cover the standardized
technology." App. 31 a-32a (emphasis added). As Judge Prost noted,
"even under the duty to disclose as defined and applied by the majority, I
believe that substantial
evidence shows that Rambus violated that duty." App. 60a nA.
In this regard, Infineon showed at trial that Rambus itself construed its claims
to cover the JEDEC SDRAMf standards. Indeed, Rambus ' own business plan stated
that "Sync DRAMs infringe claims in Rambus' filed patents and other claims
that Rambus will file in updates later in 1992." App. 60a. In addition,
Richard Crisp, Rambus' JEDEC representative, admitted that features of JEDEC's
SDRAM standard "were discussed [at the JEDEC committee meetings] in some
form or another, and we certainly had patent applications that covered aspects
of those .,. technologies." App. 63a; see also App. 62a,